Ex Parte Cohen et alDownload PDFPatent Trial and Appeal BoardMar 17, 201712592630 (P.T.A.B. Mar. 17, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/592,630 11/30/2009 Jacques Cohen H-1407B 3097 7590 03/17/2017 WTT T TAMW TONFS EXAMINER PATENT COUNSEL KUHLMAN, CATHERINE BURK 56 TERRACE HILL ROAD GILFORD, NH 03249 ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 03/17/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACQUES COHEN, TIM SCHIMMEL, and MICHAEL D. CECCHI Appeal 2015-006586 Application 12/592,630 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TIMOTHY G. MAJORS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to an apparatus for micro manipulation of biological specimens. The Examiner rejected the claims on the grounds of anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as LifeGlobal Group, LLC (see Br. 1). Appeal 2015-006586 Application 12/592,630 Statement of the Case Background Appellants’ invention relates to “oocyte, embryo and specimen positioning apparatus and a method for inspection, observation, biopsy and the micromanipulation of oocytes, embryos and cells without the use of a second device, such as a holding pipette” (Spec. 1:6—8). The Claims Claims 2, 8, 10, 12—15, and 17 are on appeal. Independent claim 12 is representative and reads as follows (emphasis added): 12. A dish for use in micro manipulation of embryos, oocytes or other cell specimens, said dish comprising: a) a well, and b) a plurality of upwardly open horizontal lanes formed in said well, said lanes each having a flat bottom wall onto which one specimen settles by gravity; said lanes each including an opening through which a micro tool can access a specimen; a narrowest end of each of said lanes being sized to conform to the size of a specific specimen whereby the specimen in question is confined in place in said narrowest end of each lane during micromanipulation of said specimen, said well having a side wall which is taller than side walls of said lanes whereby specimens in said lanes can be submerged by media solutions disposed in said well. 2 Appeal 2015-006586 Application 12/592,630 The Issues2 A. The Examiner rejected claims 12 and 15 under 35 U.S.C. § 102(a) as being anticipated by Cecchi ’5633 (Final Act. 2—3). B. The Examiner rejected claims 2, 8, 10, and 13 under 35 U.S.C. § 103(a) as being obvious over Cecchi ’563 and Cecchi ’4114 (Ans. 3—5). C. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being obvious over Cecchi ’563 and Gordon5 (Ans. 5). D. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as being obvious over Cecchi ’563 and Foster6 (Ans. 5). A. 35 U.S.C. § 102(a) over Cecchi ’563 The Examiner finds that Cecchi ’563 teaches a dish for use in micro-manipulation of oocytes 23 comprising a well 21 and a plurality of upwardly open horizontal lanes 17. The lanes have flat bottom walls on which one cell settles by gravity and are formed in the bottom surface of the well 21 (fig. 2, [0001], and [0016]). The upper region of the lane defines an opening through which a micro-tool can access the specimen (fig. 2). A narrowest ends of the lanes (the bottom ends) are sized to conform to the size of the oocyte (fig. 2) so that the oocyte is confined in place during manipulation 2 We note Appellants’ contention that the claim objections “have been addressed and dealt with,” and that “[t]hey should be withdrawn” (Br. 5). However, claim objections are petitionable and therefore not before us on appeal. See MPEP § 706.01 (the “Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”) 3 Cecchi et al., US 2008/0248563 Al, published Oct. 9, 2008. 4 Cecchi, US 2010/0075411 Al, published Mar. 25, 2010. 5 Gordon, US 5,691,194, issued Nov. 25, 1997. 6 Foster et al., US 4,444,879, issued Apr. 24, 1984. 3 Appeal 2015-006586 Application 12/592,630 [0016]. The lanes are formed in the bottom surface of the dish or well 21 [0001], therefore the walls of the dish are taller than the walls of the lanes whereby specimens in the lanes can be submerged by media solutions disposed in the well. (Final Act. 2—3.) The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Cecchi ’563 anticipates claim 12? Findings of Fact 1. Cecchi’563 teaches A container or dish is useful for the micro manipulation, micro injection, biopsy and fertilization in oocyte and embryo manipulation and culturing. The dish allows the user to more readily perform procedures used to fertilize oocytes by Intracytoplasmic sperm injection (ICSI) or other procedures, biopsy embryos and perform additional procedures for use in assisted reproductive techniques (ART), human reproduction and in-vitro fertilization (IVF). The invention allows ease in use, the reduction in the number of micro tools used in the procedure, as opposed to conventional dishes and procedures, and will allow the user to more readily locate the oocytes and embryos to be handled and worked on. (Cecchi ’563 Abstract; see also Final Act. 2—3.) 2. Cecchi ’563 teaches that “[t]he dish includes multiple depressions in its bottom surface which create a unique working configuration” (Cecchi ’563 11; see also Final Act. 2—3). 4 Appeal 2015-006586 Application 12/592,630 3. Figure 1 of Cecchi ’563 is reproduced below: Figure 1 shows a top plan view of a specimen handling dish . . . The dish 10 includes an outer wall 21 and a top surface 19. Within the dish 10 are a plurality of wells 13. The wells 13 each have an outer wall 14 and a declining bottom wall 11 with a recessed basin 17 therein. Within each of the wells 14 there is a raised post 15 which can be used to release the specimen from a micro tool. The specimen will settle into and remain in the basin 17. (Cecchi ’563 1 15; see also Final Act. 2—3.) 5 Appeal 2015-006586 Application 12/592,630 4. Figure 2 of Cecchi ’563 is reproduced below: FIG. 2 Figure 2 shows details of the interior of each of the wells 13. . . The bottom wall 11 of each well 13 is formed with two separated downwardly declining components 27 and 27’, one of which is taller than the other. The post 15 is used to release the specimen 23 from a micro tool 25, by drawing the specimen 23 against the post 15 to aid in its release from the micro tool 25. The released specimen 23 will then migrate into the recessed basin 17 where it will remain. (Cecchi ’563 1 16; see also Final Act. 2—3.) 5. The Specification teaches that “[t]he individual oocytes, cells, or embryos (specimens) are kept separate from each other in open marked or unmarked well compartments that are located in the culturing dish” (Spec. 2:35-36). 6. The Specification teaches that “[t]he apparatus ... is surrounded by walls . . . creating a small well” (Id. at 5:38—39). Principles of Law “[C]laims in an application are to be given their broadest reasonable interpretation consistent with the specification and that claim language 6 Appeal 2015-006586 Application 12/592,630 should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Analysis Claim 12: We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 2—6; Ans. 2^4; FF 1—10) and agree that claim 12 is anticipated by Cecchi ’563. We address below Appellants’ arguments. We begin with claim interpretation, since before a claim is properly interpreted, its scope cannot be compared to the prior art. The limitation in dispute is the requirement for “a well” as required by claim 12 (see Br. 5—6, Ans. 2). Appellants do not appear to provide a definition for this term in the Specification, in the claims, nor in their arguments, other than describing in the Specification that “[t]he individual oocytes, cells, or embryos (specimens) are kept separate from each other in open marked or unmarked well compartments that are located in the culturing dish” (FF 5), and that “[t]he apparatus ... is surrounded by walls . . . creating a small well” (FF 6). The Examiner contends that “[t]he terminology used to describe the various elements of the prior art do not limit the prior art structure” (Ans. 2). We conclude that the Examiner has the better position. We conclude that the broadest reasonable interpretation of the term “a well” in claim 12 is an area or compartment that is surrounded by at least a wall. 7 Appeal 2015-006586 Application 12/592,630 We next turn to Appellants’ arguments. Appellants contend that the Examiner states that Cecchi ’563 discloses a dish comprising a well 21 having a plurality of horizontal lanes 17. This is a clearly erroneous and misleading description of Cecchi ’563. The wells in Cecchi ’563 are identified by the numeral 13. The outer wall 21 is the outer wall of the dish 10. It is not the outer wall of a well 13. (Br. 5-6.) This argument is unpersuasive. As the Examiner explains, “[although Cecchi ’563 refers to element 13 as a well, element 21 forms an outer wall on the dish 10 and, thus, also defines a well [0015]” (Ans. 2; FF 2-4). In other words, because claim 12 does not differentiate one well from another, and because we concluded that “a well” in claim 12 is an area or compartment that is surrounded by at least a wall, we agree with the Examiner that what is depicted generally as reference number 21 in Figures 1 and 2 of Cecchi ’563 is also a well (Ans. 2; FF 2-4). Moreover, Cecchi ’563 teaches that “[t]he dish includes multiple depressions in its bottom surface which create a unique working configuration” (FF 2 (emphasis added); see also FF 3 (“The dish 10 includes an outer wall 21”)). Thus, dish 10, i.e., a Petri dish, of Cecchi ’563 necessarily provides a well. We further observe that Appellants do not appear to dispute that item 13 of Cecchi ’563 is also a well that has at least a wall (see FF 3^4; Br. 6). Appellants also argue that [t]he Examiner goes on to speculate that well (dish) side wall 21 is likely taller than the lane 17 side walls in the dish 10 of 8 Appeal 2015-006586 Application 12/592,630 Cecchi ’563 (Page 3, Office Action). Cecchi ’563 provides no support whatsoever for this speculative interpretation of the reference. The side walls 14 of the wells 13 are what must be taller than the side walls of the lanes 17 of Cecchi ’563. That said, why would “therefore” (to quote the Examiner) the walls (wall) 21 of the dish 10 have to be taller than the lane 17 side walls?? (Br. 6.) We are not persuaded. As the Examiner explains, Cecchi ’563 discloses that multiple depressions forming the unique working configuration (wells 13) are formed in the bottom surface of the dish (element 10) [0001]; a wall 21 around a perimeter of the dish would be taller than the walls of lane 17 within a depression or well 13 formed in the bottom surface of the dish. (Ans. 2; FF 2.) In other words, because Cecchi ’563’s wells 13 are within the dish which has depressions in its bottom surface, the walls of the wells 13 would necessarily be lower that the wall of the dish (see also FF 4). We also observe that as claim 12 does not differentiate wells and lanes that are distinct and separate from one another, the walls next to recessed basin 17 and the wall 14 as depicted in Figure 2 of Cecchi ’563 would also meet this claimed limitation (see FF 4). Claim 15: Claim 15 recites “projections adjacent to in side walls of said lanes, said projections being sized to enable dislodgment of specimens from micro 9 Appeal 2015-006586 Application 12/592,630 tools which are used in micromanipulation of specimens in said dish” (see Appellants’ claim 15).7 Appellants contend that this claim recites the inclusion of projection in side walls of the lanes for enabling dislodgment of specimens from micro tools that are used in micromanipulation of specimens in the dish. The Examiner, in rejecting this claim refers to the posts 15 which are on the bottom walls 11 of the wells 13. These posts 15 are used to release the specimens from a micro tool before the specimens migrate into the basins 17. These posts 15 are spaced apart from the basins 17 and are not intended for use in dislodging a specimen in the basins 17, they are intended for use in dislodging a specimen out of the basins 17. If the posts 15 were placed in the side walls of the lanes 17, as claimed, they would block the basins 17 from specimen migration. (Br. 6.) We are not persuaded. As the Examiner explains, [cjlaim 15 (as submitted on September 2nd, 2014) recites projections adjacent to side walls of the lanes. Cecchi ’563 discloses projections 15 adjacent or next to the side walls of lanes 17 (figs. 1 and 2). Claim 15 as submitted with the appeal brief recites “projections adjacent to in side walls of said lanes” which is not consistent with the previously examined language. (Ans. 2—3.) In other words, as seen in Figure 2 of Cecchi ’563, the recessed basin 17 clearly has side walls thereby forming the lanes, and the post 15 is 7 We note that from the Amendment dated Sept. 2, 2014, claim 15 recites “projections adjacent to side walls of said lanes” instead of “projections adjacent to in side walls of said lanes” (see Amendment dated Sept. 2, 2014 (emphasis added)). 10 Appeal 2015-006586 Application 12/592,630 clearly positioned adjacent to their side walls (see FF 4). We, thus, agree with the Examiner that Cecchi ’563 teaches the “projections adjacent to side walls of said lanes” aspect of claim 15. Further, “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “A patent applicant is free to recite features of an apparatus either structurally or functionally .... Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). “‘Functional’ terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Because Cecchi ’563 teaches the projections in a “container or dish [that] is useful for the micro manipulation” (FF 1; see also FF 4), we conclude that Cecchi ’563 teaches projections that are capable of “enabling] dislodgment of specimens from micro tools which are used in micromanipulation of specimens in said dish” as claimed. We further note that the claims do not require dislodging specimen in the basin, or lanes, as Appellants contend, or any structures that differentiate from those of Cecchi ’563. “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Ajppellanf s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). 11 Appeal 2015-006586 Application 12/592,630 B. 35 U.S.C. § 103(a) over Cecchi ’563 and Cecchi ’411 The Examiner finds that Cecchi ’563 teaches an apparatus for micro-manipulation of oocyte specimens 23 comprising a container 21 with one or more specimen capturing compartments 13 each containing a flat bottom lane 17 which gradually narrows from top to bottom (figs. 1 and 2). The lanes provide specimen positioning for micro manipulation without the need for a holding pipette (specimen held in place by components 27 and 27’ [0016]), specimen immobilized by the well [0017] therefore holding pipette would not be necessary, holding pipette disclosed as disadvantageous in [0003]). (Final Act. 3—4.) The Examiner acknowledges that “Cecchi ’563 is silent as to the lanes having a sloping bottom wall with a lowest point at the narrowing area of the lane” (id. at 4). The Examiner finds that Cecchi ’411 teaches “a plurality of lanes 36 for oocyte specimens 44 in a dish 28 wherein the bottom-most portion of the lane 40 slopes downward so that an oocyte will migrate gravitationally toward a predetermined location at the lowest point in the lane [0022]” (id.). The Examiner concludes that it would have been obvious to configure the lanes of Cecchi ’563 with a sloping bottom wall in order to further isolate the location of the oocytes within the lanes, as taught by Cecchi ’411. Cecchi ’563 already discloses the lanes get narrower toward the bottom wall (fig. 2) therefore the lowest point will be at the narrowing area of the lanes (i.e. anywhere along the bottom surface of the lanes). (Id.) 12 Appeal 2015-006586 Application 12/592,630 The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Cecchi ’563 and Cecchi ’411 would have rendered claim 2 obvious? Findings of Fact 7. Cecchi’411 teaches A container or dish used for the micro manipulation, micro injection, biopsy and fertilization of oocyte and embryo culture. The dish allows the user to more readily perform procedures used to fertilize oocyte, such as intracytoplasmic sperm injection (ICSI), biopsy embryos and perform additional procedures in used in assisted reproductive techniques (ART), human reproduction and in vitro fertilization (IVF) techniques. The invention will allow ease in use, the reduction in the number of micro tools used in the procedure, as opposed to conventional dishes and procedures, and will allow the user to more readily locate the oocytes and embryos to be handled and worked on. (Cecchi ’411 Abstract; see also Final Act. 4.) 13 Appeal 2015-006586 Application 12/592,630 8. Figure 4 of Cecchi ’411 is reproduced below: Figure 4 shows [a] dish 28 [that] includes a floor 30, an outer wall 32, and an inner wall 34. A plurality of wedge-shaped chambers 36 are disposed inside of the inner wall 34. The chambers 36 include downwardly and inwardly angled bottom walls 38 which meet at a central mid line 40. The mid line 40 angles downwardly toward the center 42 of the dish 28. When a biological specimen 44, such as an oocyte, embryo, or the like, is placed in any of the chambers 36, the specimen 44 will gravitationally migrate to the lowest point 46 in the chambers 36, where they will be, in effect, wedged in place. (Cecchi ’411122; see also Final Act. 4.) Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” 14 Appeal 2015-006586 Application 12/592,630 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Analysis Claim 2: Claim 2 recites An apparatus for micro manipulation of cell, oocyte or embryo specimens, said apparatus comprising: a container for positioning oocytes, cells or embryos, said container comprising one or more specimen-capturing compartments, wherein said specimen-capturing compartments contain one or more flat bottom gradually narrowing lanes, wherein said gradually narrowing lanes provide specimen positioning for micro manipulation of specimens without the need for a holding pipette during a micro manipulation operation, and wherein said lanes have a sloping bottom wall with a lowest point at a narrowing area of said lanes. (See Appellants’ claim 2 (emphasis added).) We agree with the Examiner that claim 2 would have been obvious over Cecchi ’563 and Cecchi ’411. We address below Appellants’ arguments. Appellants contend that [t]he Cecchi ’411 lanes 36 do not have a flat bottom wall as claimed. They have a linear bottom 40 formed by two inwardly sloped bottom walls 38. Cecchi ’563 has inwardly sloped side walls in its lanes 17, with a flat bottom wall (See FIG. 2). If one were to modify Cecchi ’563 in accordance with the teachings of Cecchi ’411, the result would be to form the lanes of Cecchi ’563 with two inwardly sloped bottom 15 Appeal 2015-006586 Application 12/592,630 walls and linear bottoms as taught by Cecchi ’411. Linear bottoms are not what is claimed in instant Claim 2. (Br. 7.) We are not persuaded. As an initial matter, we note that claim 2 recites “one or more flat bottom gradually narrowing lanes” and “said lanes have a sloping bottom wall with a lowest point at a narrowing area of said lanes” as opposed to “a flat bottom wall” as Appellants contend. Other than these recitations in claim 2, the Specification and the claims do not appear to define “flat bottom,” “flat bottom wall,” or “sloping bottom wall.” Claim 2 also does not recite any point of reference concerning the direction and orientation of different surfaces other than these recitations. “[DJuring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Moreover, during prosecution, we give claim terms the broadest reasonable interpretation as understood by a person of ordinary skill in the art in light of the specification. In re Morris, 111 F.3d at 1054 (Fed. Cir. 1997); In re Am. Acad. OfSci. Tech. Ctr., 367 F.1359, 1364 (Fed. Cir. 2004) (“Construing claims broadly during prosecution is not unfair to the applicant. . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.”) We, thus, agree with the Examiner that “Cecchi ’563 teaches a lane with a flat bottom wall as claimed. Cecchi ’411 teaches the bottom of a lane (midline 40) can be angled downwardly such that a specimen will migrate to the lowest point in a lane or chamber and wedge in place [0022]” (Ans. 3; 16 Appeal 2015-006586 Application 12/592,630 FF 3—4, 8). In other words, because Cecchi ’563 clearly teaches a surface that is flat and at the bottom of recessed basin 17 (FF 4), Cecchi ’563 suggests the “flat bottom” limitation of claim 2. Because Cecchi ’411 clearly teaches “downwardly and inwardly angled bottom walls 38” (FF 8), Cecchi ’411 teaches the “sloping bottom wall” limitation of claim 2. We, thus, agree with the Examiner that Cecchi ’563 teaches “one or more flat bottom gradually narrowing lanes,” and that Cecchi ’411 teaches “said lanes have a sloping bottom wall with a lowest point at a narrowing area of said lanes” as claimed, and that the combination would have been obvious “so that the oocyte gravitationally migrates to a specific point in the lane” (Ans. 3). We recognize, but are not persuaded by, Appellants’ contention that [t]his is a classic case of selective modification of one reference by using only a part of a second reference. This has been described as “pick and choose”. The Examiner’s rejection would choose the downwardly sloping nature of the linear bottoms of Cecchi ’411, but would exclude the linear nature of the Cecchi ’411 bottoms. (Br. 7.) As the Examiner explains, “[according to the teaching of Cecchi ’411, it would be obvious to modify the flat bottom wall taught by Cecchi ’563 to angle downwardly so that the oocyte gravitationally migrates to a specific point in the lane” (Ans. 3; FF 7—8). We conclude that the Examiner’s modification of Cecchi ’41 l’s bottom wall surface to be angled is reasonable, based on the teachings of Cecchi ’563, in order to “allow the user to more readily locate the oocytes and embryos to be handled and worked on” (FF 7), and because “the specimen 44 will gravitationally 17 Appeal 2015-006586 Application 12/592,630 migrate to the lowest point 46 in the chambers 36, where they will be, in effect, wedged in place” (FF 8). Claim 8: Claim 8 recites “wherein said lanes include openings through which a micro tool can access specimens disposed in said lanes” (see Appellants’ claim 8). Appellants argue that “[t]his rejection is clearly erroneous since Claim 8 recites ‘said lanes’ thereby specifically incorporating the lane structure recited in Claim 2 which the Examiner admits is not present in Cecchi ’563. This being the case, Cecchi ’563 can[n]ot be said to render obvious the subject matter of Claim 8” (Br. 7). We are not persuaded. The Examiner acknowledges that “Cecchi ’563 is silent as to the lanes having a sloping bottom wall with a lowest point at the narrowing area of the lane” (Final Act. 4), as opposed to Cecchi ’563 not teaching any lanes. We agree with the Examiner that Cecchi ’563 teaches that the “upper ends of lanes are open to a tool, fig. 2” (id.), and therefore, teaches structures that reasonably satisfy the requirement for “[said] lanes include openings through which a micro tool can access specimens disposed in [said] lanes” as claimed. Claim 10: Appellants argue that “[c]laim 10 [] depends from both Claims 2 and 8, and therefore contains all of their limitations. Thus this rejection is also clearly erroneous and should be reversed” (Br. 8). Accordingly, we are not persuaded for the reasons discussed above. 18 Appeal 2015-006586 Application 12/592,630 Claim 13: Similar to claim 2, Appellants contend that [t]his is a classic case of selective modification of one reference by using only a part of a second reference. This has been described as “pick and []choose”. The Examiner’s rejection would choose the downwardly sloping nature of the linear bottoms of Cecchi ’411, but would exclude the linear nature of the Cecchi ’411 bottoms. (Br. 8.) We are not persuaded for the reasons discussed above. C. 35 U.S.C. § 103(a) over Cecchi ’563 and Gordon The Examiner acknowledges that “Cecchi ’563 is silent as to indentations adjacent to open ends of each of the lanes” (Final Act. 5). The Examiner finds that “Gordon discloses an indentation 31 adjacent an open end of an oocyte chamber 4 (figs 2—3) for storage of materials such as sperm (col. 4, lines 22—27)” (id.). The Examiner concludes that it would have been obvious to “include indentations adjacent to open ends of each of the lanes in the dish taught by Cecchi ’563 in order to provide a holding area for materials such as sperm adjacent an oocyte, as taught by Gordon” (id.). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Cecchi ’563 and Gordon would have rendered claim 14 obvious? 19 Appeal 2015-006586 Application 12/592,630 Findings of Fact 9. Gordon teaches “a method and apparatus for concentrating motile sperm from a sperm sample, including concentrating sperm in the vicinity of one or more oocytes for in vitro fertilization” (Gordon Abstract; see also Final Act. 5). 10. Figure 3 of Gordon is reproduced below: Figure 3 shows “a sectional side view of a culture dish” (Gordon 3:3), having a “central depression 31” {id. at 4:18), “oocyte chambers 4,” and “sperm sample 34” {id. at 4:22—23; see also Final Act. 5). Analysis Appellants contend that “[t]his combination of references does not render obvious the subject matter of Claim 14 since the claim requires that the lanes have an open end, which Cecchi does not, and Gordon does not have lanes at all, it has wells 4” (Br. 8—9). As discussed above, we are not persuaded that Cecchi ’563 does not teach lanes having an open end. Further, the Examiner relies on Gordon for teaching indentations instead of lanes {see Final Act. 4; Ans. 3^4; FF 9—10). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it 20 Appeal 2015-006586 Application 12/592,630 fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We recognize, but are not persuaded by, Appellants’ contention that the claim requires that the indentations be adjacent to the lane open ends while the micro wells 4 in Gordon are positioned in the middle of circles of micro wells 4 [sic] and not adjacent to open ends of the micro wells 4. The micro wells 4 of Gordon do not have associated indentations positioned adjacent to open ends of each of the micro wells 4. (Br. 9). As Examiner explains, Gordon discloses an indentation 31 adjacent the open end of a microwell (the top of the microwell) (fig. 3). As stated above, the microwell is not relied upon to demonstrate the structure of the claimed lanes but rather as a single oocyte positioning structure with an indentation for storage of materials adjacent thereto. The top of the micro well is open, as are the tops of the lanes taught by Cecchi ’563. Gordon teaches an indentation 31 positioned adjacent this open end of the microwell; in the combination, an indentation is positioned adjacent the open end or top of the lane of Cecchi ’563. (Ans. 4.) D. 35 U.S.C. § 103(a) over Cecchi ’563 and Foster As set forth above, we found no deficiency in the Examiner’s rejection as it relates to claim 12, which claim 17 depends from. Appellants do not dispute the merits of Examiner’s modification of Cecchi ’563 as it relates to the rejection of claim 17, other than “Foster only teaches the use of letters or numbers to label areas of its dish, and does not provide any 21 Appeal 2015-006586 Application 12/592,630 teachings that deal with the shortcomings of Cecchi ’563” (Br. 9). Thus, Appellants fail to establish error in Examiner’s prima facie case as it relates to the rejection of claim 17. SUMMARY In summary, we affirm the rejection of claims 12 and 15 under 35 U.S.C. § 102(a) as being anticipated by Cecchi ’563. We affirm the rejection of claims 2, 8, 10, and 13 under 35 U.S.C. § 103(a) as obvious over Cecchi ’563 and Cecchi ’411. We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over Cecchi ’563 and Gordon We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as obvious over Cecchi ’563 and Foster. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 22 Copy with citationCopy as parenthetical citation